Over the past fortnight I have
spent in excess of 30 hours on aircraft, from London to Singapore to Kota
Kinabalu in Borneo, from
Sandukan back to Kota Kinabalu and home again, so it is fitting that my first
post back from holiday should be about some of the few comforts afforded to
economy class passengers onboard planes.

This is just me and a monkey taking a selfie,nothing to do with the case

Orvec
International Ltd v Linfoots Ltd [2014] EWHC
1970 is a passing off and breach of contract case heard by HHJ
Hacon in the IPEC and concerned textile products which Orvec sold to airlines for use by their
passengers. These products included pillows, blankets, headrest covers, tray
mats and towels (Hot towels? Questions Merpel, They burn my paws!).

Linfoots, an advertising agency, handled
Orvec’s website and printed advertising, including photography of Orvec’s
products. Linfoots retained copyright ownership in these photographs. After
nearly a decade of happiness, the parties’ relationship came to an end. The
parties went their separate ways.

Some of Orvec’s products were
made in Hong Kong by Intex.
That relationship also came to an end. Following this, Intex jumped into bed
with Linfoots and Linfoots supplied photographs for Intex’s website.

Orvec wasn’t happy about these
photographs and sued Linfoots on two bases:

First, it claimed that some of the images supplied to Intex were those Linfoots created for Orvec. Supplying them to Intex was, claimed Orvec, a breach of an implied term in Linfoots’ standard terms and conditions: the implied term gave Orvec a perpetual and exclusive licence under the copyright in the photographs.

Second, by using the images Intex was passing itself off as Orvec. Linfoots – the only defendant in this action – was liable too as it had created an instrument of fraud or because it had procured Intex’s passing off.

Sadly for Orvec, both of these
claims failed. Aside from the law, the claims really suffered on the facts and
evidence. Orvec only succeeded in showing that Linfoots had supplied Intex with
a single image (of a BA pillowcase) which was originally supplied to Orvec (it
appears there were more, but they were only raised at the start of trial and
the judge thought it unfair to let them in). Orvec’s evidence was lacking in
other respects as well.

Was there an implied term
granting Orvec exclusivity and so a breach of contract by Linfoots? No…

On the question of the implied
term, HHJ Hacon found Lord Hoffmann’s comments in Attorney General of Belize v
Belize Telecom Ltd [2009] UKPC 10
(a judgment of the Board of the Privy Council) instructive. Lord Hoffman noted
that the court has no power to improve a contract or introduce terms to make it
fairer or more reasonable. Its task was to work out what the contract meant:

“…It follows that in every case in which it is said that
some provision ought to be implied in an instrument, the question for the court
is whether such a provision would spell out in express words what the
instrument, read against the relevant background, would reasonably be
understood to mean…. this question can be reformulated in various ways which a
court may find helpful in providing an answer – the implied term must "go
without saying", it must be "necessary to give business efficacy to
the contract" and so on – but these are not in the Board's opinion to be
treated as different or additional tests. There is only one question: is that
what the instrument, read as a whole against the relevant background, would
reasonably be understood to mean?”

Although cautious about adding
a factor into this test, HHJ Hacon felt that the simplicity or complexity of
the alleged implied term was important:

“…I think that the more complex the putative term, the less
likely it is that the reasonable person would take it to be an implied part of
the contract. As a rule terms with detailed formulations will either be present
as an express term or not at all. A usual characteristic of an implied term is
that it is simple.”

Linfoots’ standard terms and
conditions were short and sweet – nine sentences long. The essence of the
alleged implied term was that Orvec had an exclusive licence to the photographs
such that Linfoots couldn’t supply them to anyone else. The high point of
Orvec’s argument here was that some of the photographs included its trade marks
and/or the livery, trade marks and logos of Orvec's airline clients. As Linfoot
(or any third party) could not have a legitimate reason to use such
photographs, Orvec must have been impliedly granted an exclusive licence to
them. It should also follow, contended Orvec, that the same term was implied in
respect of other photographs not showing the trade marks of Orvec of its
customers.

There is a force in the first
argument – a trade mark owner who pays a photographer to take pictures of his
trade mark-bearing products would be shocked to find the photographer selling
them on to other parties – although he may have his trade mark rights to rely
on to prevent this.

In considering it, HHJ Hacon
drew a distinction between a designer creating a logo for a client (where the
client would not expect the designer to be able to copy it or give it to
others) and a photographer taking pictures of a product which bore the client’s
trade mark. In the latter case, as just noted, trade mark rights would be in
play and further it might be possible for the photographer to make use of the
photographs with the trade mark removed or edited out (although this Kat is a
little uncomfortable with that idea, and feels it would very much depend on the
photograph and how the mark was redacted).

The judge then went on to note
the need to take a minimalist approach in implying copyright licences: starting
with a bare licence, progressing to an exclusive one only where appropriate,
and finally to an assignment of copyright in the unusual case of Griggs Group Ltd v
Evans [2005] EWCA (Civ) 11.

Taking all this together and
applying a simple and minimalist approach to the alleged implied term, all the
judge was willing to imply was a non-exclusive licence to Orvec to use the
photographs. If anything more than that was to be implied, it would only be for
the photographs in which Orvec’s trade marks featured (where as above the issue
is a little trickier). However, Orvec had failed to demonstrate that any such
photographs had been supplied to Intex by Linfoots.

Accordingly, with Orvec in
possession only of a non-exclusive licence to the relevant photographs, there
had been no breach of contract by Linfoots.

How about passing off by
Intex in which Linfoots participated? Nope…

A successful passing off claim
requires a demonstration of goodwill, proof of a misrepresentation and of
damage. Orvec’s goodwill was not disputed.

As ever this claim came down to
whether or not there had been a misrepresentation. Orvec claimed the following
misrepresentations:

(1) "Intex's use of the Images provides customers and
potential customers with the impression that these products [in the images]
originate from Intex when, in fact, they originate from the Claimant."

(2) "It also provides customers and potential
customers with the impression that the customers identified by their trade
mark, logo and trade dress are Intex's customers when, in fact, they are the
Claimant's customers."

Orvec relied upon Bristol
Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455, which
establishes the principle that where a defendant represents the claimant's
article as being the product of his own efforts and skill, this may be an
actionable misrepresentation. Orvec argued that by showing on its website
samples of products that were recognisably used in the cabins of various
airlines, including a BA pillowcase, Intex falsely represented that (1) the
products came from Intex when in truth they came from Orvec and (2) these
airlines were customers of Intex when in truth they were not.

Chen-Chen the orangutan questions the quality of Orvec's evidence

Orvec struggled to make good
these claims on the evidence. The judge found that most of the products shown in
the photographs had in fact been made by Intex. The evidence was less clear on
one other, but the product shown was generic and gave no indication that it
originated from Orvec. Further, the evidence was that most of the airlines
represented were customers of Intex, so again there was no misrepresentation.

The high point this time for
Orvec was in respect of the photograph of the BA pillowcase. BA was an important
customer of Orvec and had never been a direct customer of Intex. Further, the
fact that the pillowcase was used by BA would have been recognised by those in
the industry reviewing the photograph on Intex’s website. However, the
pillowcase had actually been made by Intex and then supplied to Orvec. Orvec
then sold it to BA. So indirectly it was an Intex product and HHJ Hacon saw no
misrepresentation in Intex using a photograph of it in these circumstances.

Thus Orvec failed to show any
passing off by Intex. Without that, there could be no liability upon Linfoot
for its involvement in that passing off and so the instrument of fraud and
procurement claims were not considered further.

A weak claim doomed to
crash?

It is always easy as a
commentator to reflect on a failed case, with hindsight, and wonder why it was
ever brought. But this Kat will do it anyway: one wonders here why the evidence
was so poor – Orvec failed to get the right photographs into the case in the
first place, leaving it to rely on a single image for most of the claim. This was notwithstanding that it was represented by solicitors and experience IP counsel (as was Linfoots). Orvec
also relied in its passing off claim largely on products which Intex had
actually made for Orvec, which its advisors must have known would make things
much harder.

There
is always more at play in these cases, and judgments never reveal the
commercial factors involved in pushing an action to trial. But one gets the
feeling that this case would have benefitted from a bit of reflection once the
evidence had been compiled, and possibly an emergency landing thereafter.On the other hand, perhaps Orvec should be given some sympathy - suddenly finding photographs made for it of its products on its competitor's website. Is the failing to stop that conduct a reflection on the way Orvec fought its case, or on the straightjacket imposed by English law's tort of passing off in the absence of a far more flexible tort of unfair competition?Photographs courtesy of my holiday in the jungles of Borneo